Fighting counterfeiting in Norway - The role of Customs
There are many reasons why counterfeiting should be taken seriously. Fake goods pose a threat to public health and safety. Further, counterfeit products cost brand owners millions each year in lost outcome.
In Norway, the customs have a prime role in stopping the international movement of counterfeit goods as they have the power and the means to detain counterfeited goods and other infringement on intellectual property ex officio.
However, with regard to customs surveillance and border control, the Norwegian legislation (through Customs Act), differ from those of the EU.
The provisions of the Norwegian Customs Act authorises the Customs to detain goods that appear to be counterfeit goods and keep them in detention for five days. The Customs will simultaneously notify the IP right holder of the detention. The IP right holder is requested to either file for a preliminary order, and/or negotiate with the importer of the detained goods. If the customs does not receive a preliminary order or a written statement on voluntary destruction signed by the importer within the five days counted from the date of notification of the detention, the goods will be released to the importer.
It should be noted that the Customs is not obliged to act pursuant to the above provision. For IP right holders there are however two alternative ways to allow the rights holder the opportunity to take action to prevent the release of the goods onto the market.
The first option is to file a Custom Notice Application requesting the Customs to detain goods suspected of infringing concrete IP rights. The Customs has provided a standard form for this purpose which enables Customs to identify easily suspected infringing goods. The Customs notices will remain in force for 12 moths, and can be extended for successive 12-month periods.
The other is that the IP rights holder may file for a Preliminary order, in which the Customs authorities are instructed to confiscate all goods that are imported bearing an identified trademark or design and which are imported by someone outside the IP rights holder's distribution list. The benefit of an interim injunction valid for 12 months is that the applicant is afforded a 6 weeks time limit counted from the notification of detention to initiate court proceedings against the importer. This will allow him more time to act than with the voluntary detention by the Customs authorities. Such interim court orders are valid for 12 months and may be renewed upon request. This has in fact turned out to be an effective system against import of counterfeit goods.
By Cecilie Bakken, Attorney-at-law, Bryn Aarflot AS
Published in Managing Intellectual Property, April Edition 2010
